DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restriction
This application contains claims directed to the following patentably distinct species:
Species I, Figs. 3-4.
Species II, Fig. 5.
Species III, Fig. 6.
The species are independent or distinct because they have specific claims that read one them. In addition, these species are not obvious variants of each other based on the current record.
Applicant is required under 35 U.S.C. 121 to elect a single disclosed species, or a single grouping of patentably indistinct species, for prosecution on the merits to which the claims shall be restricted if no generic claim is finally held to be allowable. Currently, claim 1 appears generic.
There is a serious search and/or examination burden for the patentably distinct species as set forth above because at least the following reason(s) apply: There is a serious search and examination burden on the examiner as the species have different claims for each species as well as the material is a completely different search than the grooves.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of a species to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected species or grouping of patentably indistinct species, including any claims subsequently added. An argument that a claim is allowable or that all claims are generic is considered nonresponsive unless accompanied by an election.
The election may be made with or without traverse. To preserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the election of species requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable on the elected species or grouping of patentably indistinct species.
Should applicant traverse on the ground that the species, or groupings of patentably indistinct species from which election is required, are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing them to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the species unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other species.
Upon the allowance of a generic claim, applicant will be entitled to consideration of claims to additional species which depend from or otherwise require all the limitations of an allowable generic claim as provided by 37 CFR 1.141.
During a telephone conversation with Michael Wasco on 5/6/25 a provisional election was made without traverse to prosecute the invention of Species I, claims 1-6, 12-13, and 15-19. Affirmation of this election must be made by applicant in replying to this Office action. Claims 7-11, 14 and 20 withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 1, 3, 12-13, 15 and 18-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sakaguchi et al. US 5,848,613 in view of Kobayashi et al. US 2003/0075703.
Regarding claim 1, Sakaguchi discloses a valve, comprising:
a valve body 11;
a bonnet 2 coupled to the valve body, the bonnet comprising a valve stem portion 21;
packing material 5 disposed in the valve stem portion; and
a valve stem 40 extending through the packing material and the valve stem portion,
wherein the valve stem portion comprises a thermal dissipating structure (T) that comprises a bore 21 that receives the valve stem (see Figs. 2-6, the bore receives the stem),
wherein the bore has an inner surface (bore’s have an inner surface), and
wherein the inner surface comprises features that populate the inner surface in proximity to the valve stem, circumscribe the valve stem, and are that is configured to facilitate thermal transfer through the bonnet (see Figs. 2-6, , the valve stem goes in the bore of the bonnet).
Sakaguchi discloses two grooves spaced arcuately, but lacks there being more than two grooves spaced arcuately apart from one another. Kobayashi discloses there being more than two grooves spaced arcuately apart from one another (see Figs. 3-6). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the number of grooves spaced arcuately of Sakaguchi to be more than two which is disclosed by Kobayashi as a matter of simple substitution of more grooves than two to provide more flow of fluid by using more grooves and/or “obvious to try” more grooves than two to provide more flow of fluid by using more grooves and/or the advantage of having more flow through the grooves to provide more movement and sliding performance of the valve stem as disclosed by Kobayashi.
Regarding claim 3, wherein the features comprise grooves extending axially along the valve stem (see Figs. 2-4).
Regarding claim 12, Sakaguchi discloses a valve, comprising:
a valve body 11;
a closure member (13 or bottom end of 40) disposed in the valve body;
a valve stem 40 coupled to the closure member; and
a bonnet 2 coupled to the valve body, the bonnet comprising a through bore 21 to receive the valve stem, the through bore having an inner surface (bore’s have an inner surface) adjacent the valve stem, the inner surface comprising grooves (T) that circumscribe the valve stem (the valve stem goes in the bore of the bonnet).
Sakaguchi discloses two grooves spaced arcuately, but lacks there being more than two grooves spaced arcuately apart from one another. Kobayashi discloses there being more than two grooves spaced arcuately apart from one another (see Figs. 3-6). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the number of grooves spaced arcuately of Sakaguchi to be more than two which is disclosed by Kobayashi as a matter of simple substitution of more grooves than two to provide more flow of fluid by using more grooves and/or “obvious to try” more grooves than two to provide more flow of fluid by using more grooves and/or the advantage of having more flow through the grooves to provide more movement and sliding performance of the valve stem as disclosed by Kobayashi.
Regarding claim 13, wherein the grooves extend axially in the through bore (see Figs. 2-4).
Regarding claim 15, Sakaguchi lacks the grooves having a square cross-section. Kobayashi discloses the grooves 33 having a square cross-section (Fig. 4). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the shape of the grooves of Sakaguchi to have a square cross-section as disclosed by Kobayashi as a matter of simple substitution of shapes and/or to provide more flow area with the same depth of groove.
Regarding claim 18, Sakaguchi discloses a valve, comprising:
a valve body 11;
a bonnet 2 disposed on the valve body;
packing material 5 disposed in the bonnet;
a valve stem 40 extending through the packing material, the valve stem having a longitudinal axis; and
grooves (T) disposed in proximity to the valve stem and circumscribing the valve stem (Figs. 2-6, the valve stem goes in the bore of the bonnet).
Sakaguchi discloses two grooves spaced arcuately, but lacks there being more than two grooves spaced arcuately apart from one another. Kobayashi discloses there being more than two grooves spaced arcuately apart from one another (see Figs. 3-6). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the number of grooves spaced arcuately of Sakaguchi to be more than two which is disclosed by Kobayashi as a matter of simple substitution of more grooves than two to provide more flow of fluid by using more grooves and/or “obvious to try” more grooves than two to provide more flow of fluid by using more grooves and/or the advantage of having more flow through the grooves to provide more movement and sliding performance of the valve stem as disclosed by Kobayashi.
Regarding claim 19, wherein the grooves extend along the longitudinal axis (see Figs. 2-4).
Claim(s) 5 and 16-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sakaguchi et al. US 5,848,613 in view of Kobayashi et al. US 2003/0075703 in view of Capaldo US 5,465,691.
Regarding claim 5, Sakaguchi lacks the features comprises grooves of different groove length. Capaldo discloses grooves of different groove length 18 and 24. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the grooves of Sakaguchi to be of different groove lengths as shown by Capaldo as a matter of simple substitution of groove lengths and/or as an obvious design choice in case a shorter groove length is beneficial so that the surrounding area is needed to be stronger as more material would be in that area.
Regarding claim 16, Sakaguchi lacks the grooves comprise a first set of grooves having a first dimension and a second set of grooves having a second dimension that is different from the first dimension. Capaldo discloses grooves having different dimensions (see Fig. 1, grooves 18 and 24). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the grooves of Sakaguchi to be of different dimensions as shown by Capaldo as a matter of simple substitution of groove lengths and/or as an obvious design choice in case a shorter groove length is beneficial so that the surrounding area is needed to be stronger as more material would be in that area.
Regarding claim 17, Sakaguchi lacks the grooves comprise a first set of grooves having a first length and a second set of grooves having a second length that is different from the first length. Capaldo discloses grooves having different lengths (see Fig. 1, grooves 18 and 24). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the grooves of Sakaguchi to be of different lengths as shown by Capaldo as a matter of simple substitution of groove lengths and/or as an obvious design choice in case a shorter groove length is beneficial so that the surrounding area is needed to be stronger as more material would be in that area.
Response to Arguments
Applicant’s arguments filed 1/22/26 to the 102 rejections have been fully considered and are persuasive so the 102 rejections have been withdrawn.
Applicant's arguments to the 103 rejections filed 1/22/26 have been fully considered but they are not persuasive. The examiner points out that the applicant amended the independent claims with newly cited claim limitations such that a new 103 rejection motivation was needed to address these new claim limitation in the independent claims 1, 12 and 19. All that was added was “an arcuate portion with more than two grooves spaced arcuately from one another” in each independent claim. Since Sakaguchi only shows two grooves the examiner used a reference which showed more than two grooves spaced arcuately from one another in which Kobayashi, which was already used in a 103 rejection previously, shows this feature so the examiner used this reference to modify Sakaguchi. The examiner notes that just adding more grooves to Sakaguchi that already shows multiple grooves is deemed to be blatantly obvious and the examiner has provided Kobayashi to show this feature. There are no arguments to respond to that are to anything other than the new claim limitations.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN BASTIANELLI whose telephone number is (571)272-4921. The examiner can normally be reached Monday-Thursday.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Craig Schneider, can be reached at telephone number (571)272-4921 or Kenneth Rinehart can be reached at 571-272-4881. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/John Bastianelli/
Primary Examiner, Art Unit 3753
571-272-4921